1212 Board Requires Appellant to Address Matter [R-08.2017]

37 CFR 41.50(d) authorizes the Board to require appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. This may include, for example: (A) the applicability of particular case law that has not been previously identified as relevant to an issue in the appeal; or (B) the applicability of prior art that has not been made of record. However, consideration of information disclosure statements filed while the Board possesses jurisdiction over the appeal will be held in abeyance until the Board's jurisdiction ends. See 37 CFR 41.35(d).

The rule further provides that the appellant will be given a time period within which to respond to the requirement. Extensions of time are only available under 37 CFR 1.136(b). Failure to respond within the time period set by the Board may result in dismissal of the appeal.

The making of a requirement under 37 CFR 41.50(d) is discretionary with the Board. The authority granted in 37 CFR 41.50(d) does not affect the Board’s authority to remand a case to the examiner in a situation where the Board considers action by the examiner in the first instance to be necessary or desirable. See MPEP § 1211. Also, after an appellant has replied to a requirement under 37 CFR 41.50(d), a remand by the Board to the examiner may be appropriate to permit the examiner to respond to the appellant’s response to the Board’s order.

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